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Friday, 2 January 2015

The
new year has started preparing the ground for the implementation of
the next chapter of the OHIM Convergence Programme,
a laudatory example of collaboration and dialogue within the trade
mark offices in Europe.

Back
in 2011 OHIM, the national offices and user associations agreed on
the shared purpose to harmonize their practices and built up a
collaborative and interoperable trade mark network with the vision
'To
establish and communicate clarity, legal certainty, quality and
usability for both applicant and office'.
As a result, the European Trade Mark and Design Network was born as
part of the OHIM Strategic Plan 2011-2015.

Within
the framework of the Convergence Programme, both trade mark and
design matters have been addressed in the realization of common
practices aimed at overcoming the controversial issues that hampered
a consistent protection throughout Europe. These prominent aspects of
trade mark and design have been conceived in the following Common
Practices which are to be afterwards developed in their related
Common Communications:

Trade
marks:

CP
1. Harmonisation of Classification

CP
2. Convergence of Class Headings

CP
3. Absolute Grounds – Figurative Marks

CP
4. Scope of Protection Black and White Marks

CP
5. Relative Grounds – Likelihood of Confusion

Designs:

CP 6. Convergence on Graphic Representations of Designs

CP 7. Harmonization of Product Indications

After
last year's implementation of the guidelines on black and white
marks, reported by the IPKat here,
the time has come for trade mark users, practitioners and examiners
to shed light on the impact of non-distinctive or weak components in
the assessment of the likelihood of confusion in relative grounds
cases.

To
this end, as announced in OHIM’s Alicante News,
the fifth Common Communication covering that aspect of
distinctiveness' analysis and interpretation was published on 2
October 2014 by 25 offices, namely the OHIM, all the EU trade mark
offices, except the Italian and the Finnish ones, and the three
non-EU offices of Iceland, Norway and Turkey.

The
fifth Common Communication focuses on the premises that, in the
examination of relative grounds for refusals, the earlier and the
later marks cover identical goods and/or services and coincide in a
component that has no or a weak distinctiveness. Moreover, what falls
outside the scope of this common practice can be summarised in the
four bullet points below:

The
assessment of enhanced distinctiveness and/or acquired
distinctiveness through use and/or reputation, as it is assumed that
from the circumstances of the case none of the marks are reputed or
have enhanced distinctiveness acquired through use;

Agreement
on the other factors that are considered when assessing the
likelihood of confusion;

Agreement
on the interdependencies between the assessment of distinctiveness
and all the other factors that are considered when assessing the
likelihood of confusion;

Language
issues, in that marks containing word elements with no or low
distinctiveness in English will be considered to have this weakness
in all languages and are understood by the national offices.

Likewise,
the Common Communication sets out four objectives from which some
general principles can be extracted in the following terms:

Define
what marks are subject to assessment of distinctiveness: the earlier
mark (and/or parts thereof) and/or the later mark (and/or parts
thereof);

Determine
the criteria to assess the distinctiveness of the mark (and/or parts
thereof);

Determine
the impact on likelihood of confusion (LOC) when the common
components have a low degree of distinctiveness;

Determine
the impact on LOC when the common components have no
distinctiveness.

OBJECTIVE 1

In
the analysis of the likelihood of confusion, the distinctiveness of
the earlier mark as a whole is assessed without contesting the mark's
validity. This circumstance is in line with the judgment of the Court
of Justice of the European Union (CJEU) in Case C-196/11P F1-LIVE, in
which the CJEU held that a certain degree of distinctiveness must be
acknowledged for the earlier trade mark on which an opposition is
based. In contrast, both the earlier and the later marks' components
are considered, giving priority to their common elements.

OBJECTIVE 2

In
regard to the criteria applied to assess the distinctiveness of a
mark, the answer is the overall assessment of its essential function
of origin identifier in relation to the principle of speciality: the
less capable a mark is of identifying the goods and services for
which it has been registered, as coming from one undertaking and to
distinguish them from those of another undertaking, the narrower its
scope of protection should be, taking into account its
non-distinctive or weak components. Indeed, such criteria to
determine the minimum distinctiveness of a mark are used both in
absolute and relative grounds proceedings with the difference that in
the latter instances they are also applied to measure the degree of
distinctiveness.

OBJECTIVE 3

The
starting assumption is that all the factors involved in the global
appreciation of the likelihood of confusion are deemed not to affect
the related outcome. Thus, when conflicting marks share a component
with low distinctiveness the assessment of the likelihood of
confusion focuses on the similarities/differences and the
distinctiveness of the non-common elements.

In
principle, the coincidence in a low distinctive element will not
normally lead own its own to the likelihood of confusion unless one
of the following conditions occurs:

The
other elements have a lower or the same low distinctiveness or they
have an insignificant visual impact and the overall impression of
the marks is similar; or

The
overall impression of the marks is highly similar or identical.

OBJECTIVE 4

In
cases where the conflicting marks share an element with no
distinctiveness, the preliminary assumption and the assessment of the
likelihood of confusion are the same as those reported above for
trade marks with low distinctive elements.

This
time it is agreed that the coincidence only in the non-distinctive
component does not lead to the likelihood of confusion. It is solely
when the marks' other figurative and/or elements are similar that
there will be a likelihood of confusion if the overall impression
produced by the marks is highly similar or identical.

CONCLUSIONS

Although
the likelihood of confusion is to be assessed on a case-by-case basis
and appreciated globally, taking into account all factors relevant to
the circumstances of the case, as point out in the 11th
recital of Trade Mark Directive 2008/95and in the case-law of the European Supreme Judicatures (Cases
C-251/95 Sabeland C-342/97Lloyd Schuhfabrik Meyer),
the fifth Common Communication only entails the importance of trade
marks' non-distinctive or weak components.

If even cats can converge, trade mark grantingauthorities should be able to manage it too

When
bringing or defending a case involving relative grounds for refusal,
the overall impression given by the conflicting marks is affected in
particular by their distinctive and dominant elements, playing a
fundamental role in the 'global appreciation of the visual, aural or
conceptual similarity' between the marks, as the CJEU held in Sabel.
Consequently, establishing that one or more shared components of the
conflicting marks have no or weak distinctive character is a
fundamental part of the overall assessment of the likelihood of
confusion. It follows that practical relevance should be attributed
to the way in which the absence or the low distinctiveness of trade
marks' components is substantiated before the offices, in particular
with special attention to the types of proofs which right holders are
asked to submit for the purposes of denying the components'
distinctive character.

As
to when the Common Practice on Relative Grounds
– Likelihood of Confusion will be operational, it was apparently deemed
to be effective within three months of the date of publication of the
common communication document (which after a brief calculation the
related deadline schedule should be on 2 January 2015), so we will
stay tuned and see what practice the offices undertake.

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